B. Historical Development in the United States

The first U.S. copyright statute gave the copyright proprietor "the sole right and liberty of printing, reprinting, publishing, and vending..."34/ Cases involving the copyright proprietor's attempt to control the material object after it has been vended confirm that the first sale doctrine does derive from the common law right of alienation of personal property.35 As early as 1852, American judges were carefully separating the exclusive right to vend from any rights the proprietor might have in the material object that had already been vended or sold.36/

This separation of the rights attached to copyright from any

rights in the material object was not yet labeled the first sale doctrine. It is perhaps explained best in an 1894 case where the court said:

34.

35.

36.

So long as the owner of a copyright retains the
title to the copies of the book which he has the
exclusive right to vend by virtue of the copyright,
he can impose restrictions upon the manner in which
and upon the persons to whom the copies can be
sold. ...This right to enjoy the benefit of the

prompted by a New Hampshire Supreme Court decision that upheld an
equitable servitude on jukeboxes. In the seven other post 1928 cases
that Chafee found, three plaintiffs were successful in getting the
courts to enforce restrictions and four were not. Chafee, "The Music
Goes Round and Round: Equitable Servitudes and Chattels," 69 Harv.
L. Rev. 1250, 1254-1255 (1956). Two recent cases involving similar
fact situations (the attempt to restrict the radio broadcast of a
recording) resulted in different conclusions. The second circuit
found that New York law, contrary to RCA v. Whiteman (one of the cases
discussed by Chafee), permitted the owner of literary property to
restrict further use by a remote assignee by a negative covenant.
Capitol Records v. Mercury Records Corporation, 221 F.2d 657 (2nd Cir.
1955). A more recent opinion of a federal district court disagreed.
Burke & Van Heusen, Inc. v. Arrow Drug Inc., 233 F.Supp. 881 (E.D.
Penna. 1964).

Act May 31, 1790, ch. 15, §1.

See, Nolan, "All Rights Not Reserved After the First Sale," 23 Bull.
Copyright Soc. 76 (1975).

See, e.g., Stephens v. Cady, 55 U.S. (14 How) 528 (1852); Stevens v.
Gladding, 58 U.S. (17 How) 447, 452 (1854).

copyright statutes results from the fact that the
owner has never parted with the title to the book
or the copyright, although he parted with the pos-
session of the book. But the right to restrain the
sale of a particular copy of the book by virtue of
the copyright statutes has gone when the owner of
the copyright and of that copy has parted with all
his title to it, and has conferred an absolute
title to the copy upon purchaser, although with an
agreement for a restricted use. The exclusive
right to vend the particular copy no longer remains
in the owner of the copyright by the copyright
statutes. The new purchaser cannot reprint the
copy. He cannot print or publish a new edition of
the book; but, the copy having been sold to him,
the ordinary incidents of ownership in personal
property, among which is the right of alienation,
attach to it.

In examining the roots of this distinction, the court referred to

the "ordinary incidents of personal property among which is the right of alienation 38 In an early trademark case, the court also referred to

....

the right of alienation:

[Elven under the law of copyright, when the owner
of a copyright and of a particular copy of a book
to which it pertains, has parted with all his title
to the book, and has conferred an absolute title to
it upon a purchaser, he cannot restrict the right
of alienation which is one of the incidents of
ownership in personal property.
(Citation
amitted).

391

37.

38.

39.

Harrison v. Maynard, Merrill & Co., 61 F. 689, 690-691 (2nd Cir. 1894) (Emphasis added).

Id.

Garst v. Hall & Lyon Company, 179 Mass. 588, 591, 61 N.E. 219. 5. LRA 631 (1901) (Emphasis added).

This doctrine has also been characterized as "a common-law right attached generally to the ownership of all species of property."40/ The Supreme Court also considered the issue to be one concerning "a restriction upon the subsequent alienation of the subject matter of copyright."41/

Cases involving the copyright proprietor's attempt to control the material object after it has been vended are consistent with the view that the first sale doctrine derives from the common law right of alienation of personal property and originally was not part of the copyright statute itself.

Although the first copyright statute contained no provision that established a first sale doctrine, it did give the author the exclusive right to vend his or her work. 42/ The 1909 Act gave the author the exclu sive right "to print, reprint, publish, copy and vend the copyrighted work. . ."43/ and the 1947 Act used the same language.44/

40.

41.

42.

43.

Bobbs-Merrill Co. v. Straus, 147 F. 15, 22 (2nd Cir. 1906), citing
Keeler v. Standard Folding Bed Co., 157 U.S. 659 (1895), aff'd 210
U.S. 339 (1908).

Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908). This seems the better interpretation although it has also been suggested that the doctrine may be an offshoot of the "exhaustion theory" in the law of patents. See P. Nolan, "All Rights Not Reserved After the First Sale," 23 Bull. Copyright Soc. 76, n. 2 (1975), citing Adams v. Burke, 84 U.S. (17 Wall.) 453 (1873).

Act May 31, 1790, ch. 15, § 1.

Act March 4, 1909, ch. 320, § 1, 35 Stat. 1075.

Act July 30, 1947, ch. 391 $ 1, 61 Stat. 652.

The 1976 Act does not use the word "vend" in its listing of

exclusive rights. Instead it grants a right of public distribution:

(3) To distribute copies or phonorecords of the
copyrighted work to the public by sale or other

transfer of ownership, or by rental, lease, or
lending.45/

One commentator has observed that elimination of the word "vend"

and substitution of specific types of conveyances avoids the vague generality of the single word and extends these conveyances to rental arrangements not included as part of the previous vending monopoly.46/ 2. Codification of the first sale doctrine

The first sale doctrine was originally added to the copyright

statute in the 1909 Act. It provided:

That the copyright is distinct from the property in
the material object copyrighted, and the sale or
conveyance, by gift or otherwise, of the material
object shall not of itself constitute a transfer of
the copyright, nor shall the assignment of the
copyright constitute a transfer of the title to the
material object; but nothing in this Act shall be
deemed to forbid, prevent, or restrict the transfer
of any copy of a copyrighted work the possession of
which has been lawfully obtained.47/

The 1947 Act 48/ renumbered this provision as § 27 but did not amend the contents of the provision itself.

46.

Note, "Copyright Reform and the Author's Right to "Vend":
the Unpaid Manufacturer," 10 Ind. L. Rev. 507, 526 (1977).

47. Act March 4, 1909, ch. 320 § 41, 35 Stat. 1084.

48.

Act July 30, 1947, ch. 391 § 1, 61 Stat. 652.

The Case of

The first sale doctrine is now embodied in 17 U.S.C. § 109. Section 202 (ownership of copyright distinct from ownership of material object) and section 204/a) (requirement of a writing to transfer copyright ownership) are related provisions.

D. Copyright Law Revision 1964-1976

Until 1976, Congress did not make any change in the wording of

the first sale doctrine. The first sale doctrine was revised in the cur

rent Act principally to clarify that the copyright owner retains a right to control rentals if ownership of the particular copy is not transferred, as was generally the case in 1976 with theatrical motion pictures, for example. There was, however, little discussion of the first sale doctrine during the revision effort. There was some discussion concerning the right to exhibit a copy lawfully owned without the authority of the copyright owner49/ and a proposal made by the Authors League to create a public lending right. Irwin Karp, who was the leading proponent for a public lending right, urged the inclusion of such a right. He argued that it was only just to give the author a lending right if one was to be given to the motion picture producer.50/ The proposal was rejected by Congress.

49.

50.

Preliminary Draft for Revised U.S. Copyright Law and Discussions and
Comments on the Draft, Copyright Law Revision, Part 3, 185-187 (Comm.
Print 1964); Supplementary Report of the Register of Copyrights on the
General Revision of the U.S. Copyright Law: 1965 Revision Bill,
Copyright Law Revision Part 6, 29-30 (Comm. print 1965).

Copyright Law Rev. Part 3, supra note 25, at 130. Although the motion picture industry did not oppose a lending right for authors, Edward Sargoy, counsel for motion picture interests, distinguised the lending right on the basis that authors parted with physical title and motion picture producers did not -- at that time. Id. at 131. Publishers did not support the public lending right. Id. at 132. See also 1965 Revision Bill With Discussions and Comments, Copyright Law Revision, Part 5, 61 (Comm. Print 1965).